DCT

1:23-cv-04495

Thermos LLC v. Sully Innovations Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-04495, N.D. Ill., 08/25/2023
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because Defendant, a Canadian corporation, may be sued in any judicial district. Personal jurisdiction is asserted based on Defendant’s sales to Target Corporation for resale in Illinois, importation of products into Illinois, and attendance and offers for sale at a trade show in Chicago.
  • Core Dispute: Plaintiff alleges that Defendant’s "Pillowfort" brand children's water bottles infringe one utility patent and one design patent related to beverage container lid construction and appearance, and also mimic Plaintiff's protected trade dress.
  • Technical Context: The technology concerns lid mechanisms for personal beverage containers, a highly competitive consumer product category, with a focus on features for children such as hygienic spout covers and locking mechanisms.
  • Key Procedural History: The complaint alleges a prior dispute between the parties beginning in September 2021, where Thermos asserted Canadian counterparts to the patents-in-suit against a "substantially the same" product sold by Sully in Canada. Thermos alleges that after it raised these infringement allegations, Sully stopped selling the product in Canada, made "inconsequential changes," and began selling the currently accused product in the United States.

Case Timeline

Date Event
2011-05-06 Priority Date (U.S. Patent No. D675,060)
2011-06-08 Priority Date (U.S. Patent No. 8,550,269)
2012 Thermos adopted the design of its FUNtainer Bottles (Approximate)
2013-01-29 U.S. Patent No. D675,060 Issued
2013-10-08 U.S. Patent No. 8,550,269 Issued
2021-09-10 Thermos sent letter to Sully re: infringement of Canadian patents (Approximate)
2022 Sully offered and sold Accused Product to Target in the U.S. (Approximate)
2023-03 Sully offered Accused Product for sale at The Inspired Home Show in Chicago
2023-06-16 Thermos sent letter to Target re: infringement by Sully's Bottle (Approximate)
2023-06-21 Sully received Thermos's letter asserting infringement (Approximate)
2023-08-25 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,550,269 - "Drink Bottle and Lid with Cover for Drink Spout," issued October 8, 2013

The Invention Explained

  • Problem Addressed: The patent addresses the need for personal beverage bottles that are convenient for on-the-go use, with features like a drink spout that can be used without full lid removal and a cover to keep the spout clean between uses (8,550,269 Patent, col. 1:12-29). It also aims to create a more durable bottle by designing components, like the hinge, to detach under force rather than break, and then be easily reattached (8,550,269 Patent, col. 2:1-4).
  • The Patented Solution: The invention is a multi-part lid assembly for a drink bottle. It comprises a main "inner lid" that attaches to the bottle, and a pivoting "outer lid" or cover that selectively covers a drink spout. A key feature is a push-button release mechanism for the outer lid, which is housed within an "enclosed... tunnel" to protect the mechanism from damage and spills (8,550,269 Patent, col. 1:64-col. 2:1). The hinge connecting the inner and outer lids is designed to be "selectively releasable" to prevent breakage if the lid is forced open too far (8,550,269 Patent, col. 1:41-44; Fig. 7).
  • Technical Importance: This design combines hygiene (spout cover), convenience (push-button opening), and durability (releasable hinge) in a single integrated lid system for a mass-market consumer product (8,550,269 Patent, col. 1:5-15).

Key Claims at a Glance

  • The complaint asserts at least Claim 1 (Compl. ¶32).
  • Independent Claim 1 requires:
    • A bottle with a mouth and a removable lid.
    • The lid includes an "inner lid" and an "outer lid."
    • The inner lid defines a "button tunnel" and a "spout opening," with the tunnel having an "enclosing structure defining an enclosed channel."
    • The outer lid has a hinge portion that pivotably engages the inner lid.
    • A "button" is mounted in the button tunnel, movable between locked and unlocked positions.
    • The button includes a "sliding arm slidably mounted" within the enclosed channel, preventing user contact.
    • A "locking tab" extends from the outer lid to engage the button.
    • A "drink spout" is mounted in the spout opening.
    • A "bail handle" is pivotably mounted on the outer lid.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. D675,060 - "Lid for Drink Container," issued January 29, 2013

The Invention Explained

  • Problem Addressed: Design patents do not solve technical problems; they protect the novel, non-functional, ornamental appearance of an article of manufacture (D675,060 Patent, Claim).
  • The Patented Solution: The patent claims the specific ornamental design for a "lid for drink container," as depicted in its figures (D675,060 Patent, Figs. 1-6). The design features a generally cylindrical body with a domed top, a trapezoidal push-button set within a recessed area on the front, a hinged cover, and a D-shaped carrying handle integrated into the hinge area at the rear. The visual evidence presented in the complaint shows the design from multiple perspectives, including front, rear, side, and top views (Compl. ¶23).
  • Technical Importance: The design provides a distinct aesthetic identity for a consumer product in a crowded market.

Key Claims at a Glance

  • The complaint asserts Claim 1 (Compl. ¶31).
  • Claim 1 claims "The ornamental design for a lid for drink container, as shown and described" in the patent's figures (D675,060 Patent, Claim).

III. The Accused Instrumentality

Product Identification

The accused products are children's water bottles sold by Sully under the "Pillowfort" brand, described as "12oz Stainless Steel Portable Drinkware Water Bottle" or similar variations ("Sully's Bottle") (Compl. ¶25).

Functionality and Market Context

The complaint alleges Sully's Bottle is a direct copy of Thermos's own FUNtainer bottle, which embodies the asserted patents (Compl. ¶54). The accused bottle is marketed for use by children and sold in the same channels of commerce as Thermos's product, such as Target stores and target.com (Compl. ¶28). The complaint provides visual evidence comparing the accused product to the Thermos product, showing a similar form factor, a push-button lid-release mechanism, a pop-up spout, and an integrated carrying handle. The side-by-side comparison of the products' care instructions is offered as evidence of direct copying (Compl. ¶55).

IV. Analysis of Infringement Allegations

'269 Patent Infringement Allegations

The complaint states that a claim chart demonstrating infringement of Claim 1 is attached as Exhibit 3; however, this exhibit was not included with the filed complaint document (Compl. ¶32). The infringement analysis is therefore based on the narrative allegations.

The complaint's core theory is that Sully's Bottle "meets each and every element of claim 1 of the '269 Patent" (Compl. ¶32). The complaint provides a detailed summary of the features claimed in the patent, including the inner/outer lid structure, the button tunnel with an enclosed sliding element, the locking tab, and the hinged cover (Compl. ¶22). It then alleges that Sully's Bottle contains these same features, supporting this with allegations of direct copying (Compl. ¶54) and visual comparisons to Thermos's commercial embodiment. For example, the complaint provides a side-by-side comparison of the Thermos and Sully care instructions, which include diagrams illustrating the operation of the lid's push-button, spout, and straw components (Compl. ¶55, p. 19).

  • Identified Points of Contention:
    • Technical Questions: Without a detailed claim chart, the specific mapping of accused components to claim elements is not provided. A key question will be whether the internal mechanism of the accused bottle's push-button assembly contains a "sliding arm slidably mounted within" an "enclosed channel" that is structurally and functionally equivalent to the claimed invention, or if it operates via a different mechanism.
    • Scope Questions: The case may turn on the construction of terms defining the button and hinge mechanisms. Defendant may argue that its components, while achieving a similar result, are structurally distinct from the specific embodiments described in the patent, raising the question of whether they fall outside the proper scope of the claims.

'060 Patent Infringement Allegations

The infringement allegation for the '060 design patent is based on the "ordinary observer" test, asserting that the design of Sully's Bottle is "substantially the same" as the patented design (Compl. ¶31). The complaint provides extensive visual evidence to support this, including multi-page, side-by-side photographic comparisons of the accused bottle lid and figures from the '060 Patent from various angles (front, rear, side, top, and bottom) (Compl. ¶¶30-31, pp. 11-13). This visual evidence shows strong similarities in the overall shape, the placement and shape of the push-button, the contours of the lid cover, and the form of the carrying handle.

  • Identified Points of Contention:
    • Scope Questions: The central question is whether an ordinary observer, familiar with the prior art of children's water bottle lids, would be deceived into purchasing the Sully product believing it to be the Thermos product. Defendant will likely argue that any similarities are dictated by function or are common in the field, and that sufficient differences exist to distinguish the designs.

V. Key Claim Terms for Construction

For the '269 Patent, Claim 1:

  • The Term: "enclosing structure defining an enclosed channel"

  • Context and Importance: This term is central to the novelty of the push-button mechanism. The infringement analysis will depend on whether the accused product's button housing constitutes an "enclosed channel" as claimed. Practitioners may focus on this term because it appears to protect the internal workings of the lock from both user contact and contamination, a key functional aspect.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself does not specify the material or exact shape of the channel, suggesting it could cover various forms of conduits that house the sliding arm (8,550,269 Patent, col. 10:52-56).
    • Evidence for a Narrower Interpretation: The specification describes the "enclosing structure" as a "tunnel structure 64 formed on the inner lid 20" (8,550,269 Patent, col. 5:58-60). A defendant may argue this limits the claim to the specific tunnel-like embodiment shown in figures like Fig. 5, rather than any generic housing.

  • The Term: "sliding arm slidably mounted"

  • Context and Importance: This defines the moving part within the button mechanism. Whether the corresponding component in the accused product is a "sliding arm" that is "slidably mounted" will be a key factual dispute. This is a classic structure-vs-function issue.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term "sliding arm" is not explicitly defined, which may support an interpretation covering any elongated member that undergoes translational movement to actuate the lock.
    • Evidence for a Narrower Interpretation: The figures show a specific structure for the "sliding arms 102" on the button 22 (8,550,269 Patent, Fig. 5; col. 6:21-25). A court could be persuaded that the claim is limited to this particular configuration, especially in distinguishing it from other types of mechanical linkages like pivots or levers.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Sully knowingly encouraged end-users to infringe by providing instructions for use and assembly with its product (Compl. ¶¶43, 45, 50, 53). The complaint includes a side-by-side comparison of the parties' illustrated care instructions as evidence of this intent (Compl. ¶55, p. 19).
  • Willful Infringement: Willfulness is alleged based on several grounds. First, Thermos alleges Sully had pre-suit knowledge of the asserted patents due to a prior dispute over corresponding Canadian patents starting in September 2021 (Compl. ¶¶58-60, 63). Second, Thermos sent a cease-and-desist letter to Sully's distributor, Target, in June 2023, which was forwarded to Sully (Compl. ¶¶61, 64). Third, the complaint alleges deliberate and direct copying of Thermos's commercial product, supported by the allegation that Sully copied Thermos's care and use instructions nearly verbatim (Compl. ¶¶54-55).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. A central issue will be one of deliberate copying versus independent development. The complaint's evidence of a prior Canadian dispute and nearly identical care instructions will be weighed against any evidence Sully can produce of its own design process. This will be critical for the willfulness and trade dress claims.
  2. A key legal question will be one of claim scope for the utility patent: does the internal locking mechanism of the accused bottle literally infringe the "enclosed channel" and "sliding arm" limitations of Claim 1, or will the analysis depend on the doctrine of equivalents? The outcome may hinge on whether the court adopts a narrow construction tied to the patent's specific embodiments.
  3. A dispositive visual question will be one of ornamental similarity for the design patent: in the context of a crowded market for children's beverage containers, is the overall visual impression of the accused lid "substantially the same" as the patented design to an ordinary observer, or are the differences sufficient to avoid infringement?